Trademark

A trademark is a word, symbol, or phrase used to identify the source of products and to distinguish the products of one manufacturer or seller from the products of another.

A service mark is like a trademark except it is used to identify services rather than a product.

Trade dress is the distinctive color, shape, packaging, design, or other visual characteristics of a product that identify the source of the product. The classic example of trade dress is the distinctive shape of the Cola-Cola bottle.

A mark must be used in commerce in connection with your product or service to qualify as a trademark. Also, a generic mark, or a mark that describes the category of your product or service (such as the mark “bank” to describe your banking services), is not protectable as a trademark. Finally, a merely descriptive mark, or a mark that merely describes a quality or characteristic of the product or service, may not be protectable as a trademark except when the mark has achieved sufficient public recognition through long and continuous use in the marketplace.

If you wish to register your mark with the U.S. Patent and Trademark Office and are not yet using the mark in commerce but have the intent to do so, you can file an “intent to use” application and then, once you are using your mark in commerce, amend your application with a “Statement of Use,” but you must do so within the time frame required by the Trademark Office. The Trademark Office will not register the mark until you are actually using it in commerce.

Yes. If your mark is protectable as a trademark and your use of the mark in connection with your product or service precedes that of others using the same or similar mark, you automatically have trademark protection without registration. Registration of the mark with the U.S. Patent and Trademark Office and in state or foreign trademark registries, depending on the extent of your use, provides additional protections and benefits, as described below.

Although you do not need to register your trademark to acquire trademark protection, registration with the U.S. Patent and Trademark Office provides additional protections and benefits, including 1) notice to the public that you claim ownership in the mark, 2) legal presumption of your exclusive right to use the mark in connection with your products or services, 3) a basis to register your mark outside the United States, and 4) a basis to prevent importation of infringing foreign products. Also, registration is required to file a trademark-infringement lawsuit in federal court.

Before selecting a trademark, you should determine if the mark is available for your use. This is important for two reasons: 1) to determine whether your mark is capable of registration, or protectable as a trademark; and 2) to avoid opposition to your registration by the owner of a similar mark.

You can order a commercial trademark search or hire an attorney to order or conduct a trademark search on your behalf. You can also search various online resources, such as the U.S. Patent and Trademark Office database, state trademark registries, domain-name registries, phone registries, business registries, and registries particular to your product or service. Because of the many factors that should be considered in determining the availability of a trademark, you should consider consulting an attorney.

Federal trademark registration can be effective indefinitely if you maintain registration of your trademark by filing the required maintenance documents at the appropriate times. These include 1) a declaration of continued use between the fifth and sixth anniversaries of registration and 2) a declaration of continued use and an application for renewal between the ninth and tenth anniversaries of registration and between every ninth and tenth year afterward.

You can use the ™ symbol (or “SM” in the case of a service mark) next to the mark before the mark is registered to indicate that you assert trademark protection over it. You can use the ® symbol next to your mark once it is registered with the U.S. Patent and Trademark Office. You should only use the ™ and ® symbols in connection with your mark when you are using the mark as a source indicator.

The U.S. Patent and Trademark Office registration fees are listed on the Office’s website.